Legal News

Patent laundering clauses in licences (ASSIA v BT)

Published on: 03 August 2022
Published by a LexisNexis IP expert
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Article summary

IP analysis: ASSIA, a Californian company, claimed a declaration about the correct meaning of a patent licence agreement between ASSIA and BT, executed in 2015. The licence agreement had been concluded as part of the settlement of patent litigation between the two companies in the UK and US, and EPO opposition proceedings. The licence contained a clause headed ‘CLARIFICATION REGARDING PATENT LAUNDERING’ (clause 10). ASSIA’s case was that certain of BT’s wholesale supplies of its broadband products fell within the scope of the first part of clause 10, clause 10.1, and were therefore unlicensed. The court rejected ASSIA’s case, finding that the activity complained of did not fall within the scope of clause 10.1. In doing so, as well as making various factual findings about the nature of the activity, the court construed clause 10.1 in what is believed to be the first English decision concerning a ‘patent laundering’ clause, albeit one in which the decision ultimately depended on the facts. Written by Chris...

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